How can an applicant overcome a rejection based on lack of ornamentality?
An applicant can overcome a rejection based on lack of ornamentality under 35 U.S.C. 171 by providing evidence that demonstrates the ornamental nature of the design. The MPEP outlines several ways to overcome such a rejection:
- Submit an affidavit or declaration under 37 CFR 1.132 explaining which features of the claimed design were created to enhance saleable value or increase demand for the article.
- Provide advertisements that emphasize the ornamentality of the article embodying the claimed design.
- Show evidence that the appearance of the design is ornamental through its distinctness from prior art or attempts to develop consumer recognition.
- Submit a statement from a company representative explaining the motivating factors behind the design’s creation.
- Present alternative designs that could have served the same function, indicating that the appearance was not purely dictated by function.
- Establish that the article’s design is a ‘matter of concern’ due to its visibility at some point between manufacture and ultimate use.
It’s important to note that attorney arguments alone are not a substitute for evidence to establish the ornamentality of the claim.
To learn more: